United States District Court, Northern District of Illinois, E.D
December 6, 1982
T.J. HOOKER, PLAINTIFF,
COLUMBIA PICTURES INDUSTRIES, INC., A CORPORATION, SPELLING-GOLDBERG PRODUCTIONS, A PARTNERSHIP OR A CORPORATION, AND AMERICAN BROADCASTING COMPANIES, INC., A CORPORATION, DEFENDANTS.
The opinion of the court was delivered by: Kocoras, District Judge:
Plaintiff is a professional woodcarver from Woodstock,
Illinois. Examining the host of exhibits appended to the
affidavit which he has submitted, it appears that while plaintiff
does carve other birds, he specializes in ducks. Plaintiff's
ducks are of the highest quality. Some of them are described as
"exquisite" and sell for a great deal of money. Plaintiff's
Affidavit, Exhibits 1, 4. Plaintiff's name is T.J. Hooker. He
runs a business by the same name producing ducks and other wooden
creatures. Among aficianados of such art, plaintiff and his ducks
are "internationally renowned." Id., Exhibit 2 at 3, Exhibit 3.
Plaintiff has garnered such wide acclaim by dint of his fine
workmanship and his extensive promotion and marketing. Each year,
plaintiff sells "many hundreds of thousands of dollars worth of
wildlife art identified by his name." Complaint ¶ 10.
The defendants are Columbia Pictures Industries, Inc.;
Spelling-Goldberg Productions; and American Broadcasting
Companies, Inc. These companies produce and broadcast a
television series about a fictional policeman in California.
Never having heard of plaintiff or his celebrated ducks, the
defendants happened to name their imaginary policeman "T.J.
Hooker." Not surprisingly, the series is also entitled "T.J.
Hooker." Plaintiff admits that this choice of a name for the
character and series "may be a mere coincidence." Plaintiff's
Memorandum in Support of Motion for Preliminary Injunction at 7.
However, plaintiff thinks that he nevertheless has been wronged,
and he brings this action seeking to vindicate his rights. The
lawsuit revolves around the use of the name "T.J. Hooker." The
central theme in all four counts of plaintiff's complaint is that
"T.J. Hooker" is his name and the defendants cannot use it
without his permission.
Plaintiff grounds his claims for relief on four theories. The
defendants contend that plaintiff has failed to state a claim
under any of these theories. Accordingly, they have moved to
dismiss the complaint under Fed.R.Civ.P. 12(b)(6). Plaintiff, in
turn, has moved for a preliminary injunction under Fed.R.Civ.P.
65, seeking to enjoin the defendants from advertising or
broadcasting their show using the name "T.J. Hooker." As might be
expected, the defendants vigorously oppose this motion.
Count I of the complaint is based upon the common law tort of
appropriation of the plaintiff's name or likeness for the
defendants' benefit or advantage. In order to state a claim for
relief based on this theory, it is vital that some
"appropriation" be alleged. See W. Prosser, Law of Torts § 117 at
804-07 (4th ed. 1971). "Appropriation"
in this context means more than the mere coincidental use of a
name that happens to be the same as that of the plaintiff. Dean
Prosser explained this as follows:
It is the plaintiff's name as a symbol of his
identity that is involved here, and not as a mere
name. Unless there is some tortious use made of it,
there is no such thing as an exclusive right to the
use of a name; and any one can be given or assume any
name he likes. It is only when he makes use of the
name to pirate the plaintiff's identity for some
advantage of his own, as by impersonation to obtain
credit or secret information, or by posing as the
plaintiff's wife, or providing a father for a child
on a birth certificate, that he becomes liable. It is
in this sense that "appropriation" must be
understood. It is therefore not enough that a name
which is the same as the plaintiff's is used in a
novel, or the title of a corporation, unless the
context or the circumstances indicate that the name
is that of the plaintiff. . . . Nor is there any
liability when the plaintiff's character, occupation,
and the general outline of his career, with many real
incidents in his life, are used as the basis for a
figure in a novel who is still clearly a fictional
Id. at 805-06 (footnotes omitted).
Similarly, the Restatement of Torts makes it clear that it is
not the use of the plaintiff's name which constitutes a tort but
rather the appropriation of the value of his name and reputation:
It is not enough that the defendant has adopted for
himself a name that is the same as that of the
plaintiff, so long as he does not pass himself off as
the plaintiff or otherwise seek to obtain for himself
the values or benefits of the plaintiff's name or
identity. Unless there is such an appropriation, the
defendant is free to call himself by any name he
likes, whether there is only one person or a thousand
others of the same name. Until the value of the name
has in some way been appropriated, there is no tort.
Restatement (Second) of Torts § 652C, comment c (1976) (emphasis
Examining Count I in light of the foregoing principles, it is
apparent that plaintiff has failed to allege a tortious
appropriation of his name. Plaintiff does allege that
"[d]efendants' . . . use of plaintiff's name appropriates the
right of publicity in plaintiff's celebrated name." Complaint ¶
22. But this broad, conclusory allegation cannot substitute for
allegations of facts showing that the defendants used the name
"T.J. Hooker" as a means of pirating plaintiff's identity. By his
own admission, the commercial value of plaintiff's name is in the
field of wildlife art. Complaint ¶¶ 9-12. Hunters, sportsmen, and
collectors identify plaintiff's name with fine carvings of ducks
and other fowl. There is nothing in the complaint which can be
construed as an allegation that the defendants adopted the name
"T.J. Hooker" in order to avail themselves of plaintiff's
reputation as an extraordinary woodcarver.
Plaintiff admits that the fictional television series at issue
here is a "police drama." Complaint ¶ 17. It is difficult to
imagine a subject further removed for the life of T.J. Hooker the
artisan. The facts and circumstances alleged by plaintiff provide
no basis upon which it can be found that the name "T.J. Hooker,"
as used in the defendants' fictional television series, in any
way refers to the real T.J. Hooker.
There being no well-pleaded allegation of appropriation of the
value of plaintiff's name, plaintiff has failed to state a claim
upon which relief can be granted. Accordingly, the motion to
dismiss is granted as to Count I.
Count II appears to be predicated on a different branch of the
so-called "right of privacy." In Count II, plaintiff repeats the
allegations of Count I and concludes that these allegations state
a claim for invasion of his privacy. It is not clear exactly what
plaintiff's theory is in this count, but it appears that he may
be seeking relief for what Dean Prosser calls the tort of placing
a person "in a false light in the public eye." Prosser, supra, at
812. For example, plaintiff
states, "[U]se of the name T.J. Hooker in connection with
defendants' television program will affect adversely the
reputation of plaintiff T.J. Hooker with all who might associate
him with the program and its promotion." Plaintiff's Memorandum
in Support of Motion for Preliminary Injunction at 12. Similarly,
plaintiff also declares, "Defendants are using [plaintiff's] name
for a police program. Association with a television police
program is offensive to plaintiff and his reputation as an
artist. As a result, he has suffered pecuniary and other damage
to his reputation." Plaintiff's Memorandum in Opposition to
Motion to Dismiss at 11.
As in Count I, the foundation of plaintiff's claim in this
count is the fact that the fictional character in the television
series happens to have the same name as plaintiff. Plaintiff
apparently reasons that the violent behavior of the fictional
T.J. Hooker will be ascribed to the real T.J. Hooker, whose only
violence, if it can be called that, consists of applying his
knife to inanimate blocks of wood as he transforms them into
wonderfully lifelike birds. Under this logic, every violent deed
committed by the chimerical California lawman is the functional
equivalent of a public declaration that T.J. Hooker the Illinois
woodcarver is actually a man whose violent propensities belie the
image of bucolic serenity he cultivates.
This reasoning is unsound. Plaintiff has not alleged an
identity between himself and the fictional character in the show
sufficient to permit such conclusions. As plaintiff readily
admits, the show is a "drama," an adventure story depicting the
television industry's conception of police work. No reasonable
person viewing such a show would understand it to be a commentary
on the life of an internationally acclaimed wildlife artist named
T.J. Hooker. There exists a fundamental dichotomy in the
identities of the fictional character and the real person which
is not dispelled by the mere happenstance of their possessing the
The weight of authority supports this conclusion. Middlebrooks
v. Curtis Publishing Co., 413 F.2d 141 (4th Cir. 1969), is but
one of many cases which illustrate the principles involved. In
Middlebrooks, an author who had grown up with a boy named Larry
Esco Middlebrooks had written a book featuring a character by the
name of "Esco Middlebrooks." In the book, the fictional character
engaged in conduct which the Fourth Circuit Court of Appeals
later described as "censurable." The same author later wrote a
magazine story in a similar vein. When the real Larry Esco
Middlebrooks learned that the author proposed once again to use
the name "Esco Middlebrooks," this time as the name of the
leading character in the magazine story, he objected. The author
went ahead with the article, but he changed the character's name
from "Esco Middlebrooks" to "Esco Brooks." After the article was
published, Larry Esco Middlebrooks brought suit, alleging that he
had suffered impairment of his reputation and subjection to
ridicule, as well as lost wages and promotions in his employment.
The district court entered judgment for the defendant
[T]he published story was fictional and no one could
reasonably conclude that the fictional character
"Esco Brooks" was one and the same person as
plaintiff, or that he was reasonably identifiable as
such. Neither is there any showing that such
character was intended by the author or by defendant
to be identified as, or to portray, plaintiff.
281 F. Supp. 1, 8 (D.S.C. 1968). The Fourth Circuit Court of
Appeals affirmed, concluding that the district court's finding of
no reasonable identification between the plaintiff and the
fictional character was supported by the "marked dissimilarities
between the fictional character and the plaintiff." 413 F.2d at
Middlebrooks, of course, was decided after the district court
had heard evidence on the plaintiff's allegations. However,
despite the difference in the procedural posture of the instant
case, the legal principles are readily transferable. T.J. Hooker
has alleged nothing to show that the "T.J.
Hooker" police show is or was intended to be a nonfictional
account of his activities as a woodcraftsman. Indeed, the
opposite is true. Plaintiff Hooker acknowledges the enormous
dissimilarities between himself and the fictional police
character. On their face, it is obvious that the allegations
which plaintiff does make in Count II are wholly insufficient,
under any set of facts he could prove, to support a finding of a
reasonable identification between plaintiff and the fictional
character bearing the same name.
Accordingly, the motion to dismiss Count II is granted.
Count III of the complaint is grounded on an alleged violation
of the Illinois Deceptive Trade Practices Act, Ill.Rev.Stat. ch.
121 1/2, § 311 et seq. In support of his claim under this
statute, plaintiff repeats the allegations of Count I and adds
the conclusory allegation that defendants' "use of plaintiff's
name T.J. HOOKER is likely to cause confusion or misunderstanding
as to the sponsorship, affiliation, connection or association of
plaintiff with defendants' program." Complaint ¶ 28.
The Illinois Deceptive Trade Practices Act provides in
A person engages in a deceptive trade practice
when, in the course of his business, vocation or
(2) causes likelihood of confusion or
misunderstanding as to the source, sponsorship,
approval or certification of goods or services;
(3) causes likelihood of confusion or
misunderstanding as to affiliation, connection or
association with or certification by another;
(12) engages in any other conduct which similarly
creates a likelihood of confusion or of
misunderstanding. . . .
Ill.Rev.Stat. ch. 121 1/2, § 312. Essential to the maintenance of
an action under this statute are well-pleaded allegations
indicating the existence of a "likelihood of confusion." See
National Conference of Bar Examiners v. Multistate Legal Studies,
Inc., 212 U.S.P.Q. 673, 678 (N.D.Ill. 1981). Plaintiff's
allegation in paragraph 28 of the complaint initially appears to
meet this requirement, since it parrots the statutory language.
But, upon a closer examination, it is clear that paragraph 28 is
actually nothing more than a sweeping legal conclusion cast in
the form of a factual allegation. See Wright & Miller, Federal
Practice and Procedure: Civil § 1357 at 596. As such, this
paragraph is not accepted as true, see, e.g., Frederiksen v.
Poloway, 637 F.2d 1147, 1150 n. 1 (7th Cir. 1980), cert. denied,
451 U.S. 1017, 101 S.Ct. 3006, 69 L.Ed.2d 389 (1981); Watters v.
Harris, 656 F.2d 234, 240 (7th Cir. 1980); Mitchell v. Archibald
& Kendall, Inc., 573 F.2d 429, 432 (7th Cir. 1978), and it is
necessary to examine the other allegations in the count, which
will be accepted as true, to see if they adequately allege the
requisite "likelihood of confusion."
"Likelihood of confusion" has the same meaning in unfair
competition cases under the Deceptive Trade Practices Act as it
has in trademark infringement cases. See, e.g., Scott v. Mego
International, Inc., 519 F. Supp. 1118, 1136-37 (D.Minn. 1981).
"Likelihood of confusion" exists when the defendant's use of a
deceptive trade name, trademark, or other distinctive symbol is
likely to confuse or mislead consumers as to the source or origin
of the product or service. See J. Gilson, Trademark Protection
and Practice, § 5.01 (1982). The standard requires only that a
seller identify his product or service in such a manner that
"`purchasers exercising ordinary care to discover whose products
they are buying will know the truth and not become confused or
mistaken.'" Dave Grossman Designs, Inc. v. Bortin, 177 U.S.P.Q.
627, 630 (N.D.Ill. 1973); Cameo, Inc. v. Plough, Inc., 185
U.S.P.Q. 228, 230 (N.D.Ohio 1975). There must be "a likelihood,
and not a mere possibility, of confusion." Instrumentalist Co. v.
Marine Corps League, 509 F. Supp. 323, 331 (N.D.Ill. 1981)
(emphasis in original). See Kirkland v. National Broadcasting
Co., 425 F. Supp. 1111,
1115 (E.D.Pa. 1976), aff'd without opinion, 565 F.2d 152 (3d Cir.
Examining the allegations of Count III in light of the
technical meaning of the term "likelihood of confusion," it
becomes clear that those allegations are insufficient to state a
claim under the Illinois Deceptive Trade Practices Act. Even
accepting the truth of plaintiff's allegation that "[defendants']
use of the name T.J. HOOKER will attract the attention of that
large segment of the population familiar with plaintiff's name
and reputation to defendants' program," Complaint ¶ 20, this
cannot be construed as the sort of marketplace confusion
contemplated by the drafters of the Act. Plaintiff has alleged
absolutely nothing to indicate either that consumers of his
products will be confused as to his affiliation with the
defendants' police drama or that viewers of the program will be
confused as to the show's affiliation with T.J. Hooker's
Accordingly, the motion to dismiss is granted as to Count III.
Count IV of plaintiff's complaint asserts a claim based upon
section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). This
federal trademark statute provides in pertinent part:
Any person who shall affix . . . or use in
connection with any goods or services . . . a false
designation of origin, or any false description or
representation, including words or other symbols
tending falsely to describe or represent the same,
and shall cause such goods or services to enter into
commerce . . . shall be liable to a civil action by
any person . . . who believes that he is or is likely
to be damaged by the use of any such false
description or representation.
In making this claim, plaintiff once again repeats the basic
allegations of Count I. He then repeats the conclusory allegation
contained in paragraph 28 of Count III, which was rejected in the
discussion above. Plaintiff concludes by alleging a similarly
broad legal conclusion: "Defendants' aforesaid use of plaintiff's
name T.J. HOOKER constitutes a false representation in violation
of [the statutory provision quoted above]." Complaint ¶ 32.
As with a claim under the Deceptive Trade Practices Act, it is
fundamental to a claim under section 43(a) of the Lanham Act that
a plaintiff make well-pleaded allegations indicating that the
defendant has created a "likelihood of confusion" as to the
origin of its products. See, e.g., International Order of Job's
Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th Cir. 1980).
This requirement was discussed by the Court of Appeals for the
Ninth Circuit in Toho Co., Ltd. v. Sears, Roebuck & Co.,
645 F.2d 788 (9th Cir. 1981). In that case, Toho, a Japanese corporation
which owned the rights to the fictional reptilian monster
"Godzilla" sued the American retailer for what Toho alleged was
an improper use by Sears of a likeness of "Godzilla." Toho and
its licensees produced and distributed movies and other products
featuring "Godzilla" and used the monster's picture, as well as
the slogan "King of the Monsters," to promote these products.
Sears produced and sold plastic garbage bags in boxes which
displayed the word "Bagzilla" along with a humorous picture of a
reptilian creature and the legend "Monstrously Strong Bags."
In affirming the district court's dismissal of Toho's complaint
for failure to state a claim, the Ninth Circuit concluded that
"Toho ha[d] not alleged facts that would permit a conclusion that
consumers are likely to be confused as to source or sponsorship
of the garbage bags." 645 F.2d at 791. The court considered
several factors in reaching this conclusion. However, the most
influential of those factors was the sharp difference in the
nature of the products involved, the court holding that "[t]he
goods are unrelated as a matter of law." Id.
While there are certain factual differences between Toho and
the instant case, there are also strong analogies, and the Toho
reasoning is fully applicable to plaintiff's allegations in Count
IV. As in Toho,
plaintiff does not allege that the goods he produces are in any
way related to the television "product" produced by the
defendants. Plaintiff cannot in good faith make such an
allegation. His complaint acknowledges the distinct nature of the
two products. They are, as in Toho, "unrelated as a matter of
law." Moreover, as in the Toho case, the channels through which
the products are marketed appear, from plaintiff's own
allegations, to be entirely different. Plaintiff sells his goods
through speciality catalogs and gift shops. The defendants, on
the other hand, "market" their show on a nationwide television
network, making it available to every television viewer in the
country. Furthermore, the Ninth Circuit stated in Toho that "[i]n
order to raise the inference of a likelihood of confusion, a
plaintiff must show that the defendant intended to profit by
confusing consumers." Id. at 791 n. 2 (emphasis in original).
Nothing in plaintiff's complaint can fairly be read as an
allegation that these defendants had such an intent.
The conclusion is therefore inescapable that plaintiff has,
like the plaintiff in Toho, failed to allege facts that would
permit a conclusion that consumers are likely to be confused as
to the source or sponsorship of the television show "T.J.
Accordingly, the defendants' motion to dismiss is granted as to
For the foregoing reasons, the motion of the defendants to
dismiss the complaint in its entirety pursuant to Fed.R.Civ.P.
12(b)(6) for failure to state a claim is granted. And, in
accordance with this decision to dismiss the complaint, the
plaintiff's motion for a preliminary injunction based upon Counts
I and II of the complaint is denied.
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